United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 3IiU-14S0
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
09/866,665
05/30/2001
Takaharu Kondo
5514 7590 02/09/2004
fitzpatrick cella harper & scinto
30 ROCKEFELLER PLAZA
NEW YORK, NY 10112
35.CI5382
5130
EXAMINER
MLTTSCHLER, BRIAN L
ART UNIT
PAPER NUMBER
1753
DATE MAILED: 02/09/2004
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO*90C (Rev. 10/03)
Office Action Summary
Application No.
09/866,665
Examiner
Brian L. Mutschler
Applicant(s)
KONDO ET AL
Art Unit
1753
~ ThB MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
• Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).
Status
1 )I3 Responsive to coinmunication(s) filed on 28 July 2003 and 29 August 2003 (RCE) .
2a)l3 This action is FINAL. 2b)n This action is non-final.
3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
Disposition of Claims
4) H Claim(s) 1-15 is/are pending in the application.
4a) Of the above claim(s) is/are withdrawn from consideration.
5) 0 Claim(s) is/are allowed.
6) 13 Claim(s) 1-15 is/are rejected.
?)□ Claim(s) is/are objected to.
8) 0 Claim{s) are subject to restriction and/or election requirement.
Application Papers
9) n The specification is objected to by the Examiner.
10) n The drawing{s) filed on is/are: a)D accepted or b)\Z\ objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
1 1) 0 The proposed drawing correction filed on is: 3)0 approved b)\Z\ disapproved by the Examiner.
If approved, corrected drawings are required in reply to this Office action.
12) n The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 119 and 120
13) n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-{d) or (f).
a)nAII b)n Some*c)n None of:
1 .□ Certified copies of the priority documents have been received.
2.D Certified copies of the priority documents have been received in Application No. .
3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.
14) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application).
a) n The translation of the foreign language provisional application has been received.
15) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)
1 ) □ Notice of References Cited {PTO-892) 4) ^ Interview Sumnnary {PTO-41 3) Paper No{s). 15 .
2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) [D Notice of Informal Patent Application (PTO-1 52)
3) [Zl Information Disclosure Statement(s) {PTO-1 449) Paper No(s) . 6)0 Other:
U.S. Patent and Trademark Office
PTO-326 (Rev. 04-01)
Office Action Summary
Part of Paper No. 16
Application/Control Number: 09/866,665 Page 2
Art Unit: 1753
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1 . A request for continued examination under 37 CFR 1 .1 14, Including the fee set
forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
application is eligible for continued examination under 37 CFR 1.114, and the fee set
forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
has been withdrawn pursuant to 37 CFR 1 .1 14. Applicant's submission filed on July 28,
2003, has been entered.
Claim Rejections -35 USC § 103
2. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.
3. Claims 1-7 and 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Matsuda et al. (U.S. Pat. No. 5,571,749) in view of Yamazaki (U.S. Pat. No.
6,028,264) and in view of Yamazaki (U.S. Pat. No. 5,556,794), herein referred to as US
'749, US '264 and US 794, respectively.
US '749 discloses a method for producing silicon thin films, particularly for use in
solar cells, using high-frequency plasma CVD (col. 15, line 9). US 749 discloses
forming i-type silicon thin films using a material gas comprising silicon fluoride,
hydrogen and oxygen (col. 15, lines 36-53; col. 33, line 60; col. 34, line 12). The flow
t
Application/Control Number: 09/866,665 Page 3
Art Unit: 1753
rate of the hydrogen is usually nnuch higher than the flow rate of the silicon containing
gas (see Tables 1-5). The examples shown in US 749 are formed at pressures higher
than 50 mTorr (Tables 1-5). US 749 further discloses the use of oxygen-containing
gases in the material gas mixture (col. 15, line 34).
The method and thin film of US 749 differs from the instant invention because
US 749 does not disclose following:
a. The concentration of oxygen contained in the material gas is 0.1 to 0.5
ppm based on a concentration of silicon atoms, as recited In claims 1 , 4
and 10; and
b. The silicon thin film contains oxygen atoms at a concentration of from
1 .5x1 0''® atoms/cm^ to 5.0x10^^ atoms/cm^, as recited in clams 5 and 1 1 .
US 794 and US '264 teach methods for reducing the oxygen concentration In the
layers of silicon thin films using molecular sieves or zeolites to adsorb oxygen when
forming i-type layers solar cells having pin junctions (US '264 col. 6, line 20). US '264
teaches the formation of an i-type silicon thin film layer having an oxygen concentration
less than 5.0x10^® atoms/cm^ and as low as 5.0x10^^ atoms/cm^ (col. 6, line 26). US
'794 teaches the formation of an i-type silicon thin film less than 5.0x10^® atoms/cm^ or
as low as 5.0x10^^ atoms/cm^ (col. 8, line 62; col. 9. line 44).
Regarding claims 5 and 1 1 , it would have been obvious to one having ordinary
skill in the art at the time the invention was made to have modified the silicon thin film of
US '749 to use a thin film having an oxygen concentration of 1 .5x10''® atoms/cm^ to
5.0x10^® atoms/cm^ as taught by US '264 and US 794 because oxygen in the intrinsic
Application/Control Number: 09/866,665 Page 4
Art Unit: 1753
layer of solar cells act as donor centers and decreases the photo-sensitivity of solar
cells (US 794 col. 3, lines 1 9-42).
Claims 5 and 1 1 are product-by-process claims, and as such, if the product is the
same as or obvious from a product of the prior art, the claim is unpatentable (see MPEP
§ 21 13). Since all of the references teach the use of a CVD method and US 794 and
US '264 disclose the oxygen concentration in the final product, the instant claims would
have been obvious over the prior art.
Furthermore, in light of the fact that US 794 and US '264 teach the formation of
silicon layers having the specified oxygen concentration, and because the oxygen
concentration that is deposited is dependent on the concentration contained within the
material gas, it would have been inherent in the fabrication process of US 794 and US
'264 to have used a material gas with an oxygen concentration of 0.1 to 0.5 ppm based
on the concentration of silicon atoms. Using the specified process, a different oxygen
concentration would have yielded a different concentration of oxygen in the deposited
layer.
4. Claims 8 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Matsuda et aL (U.S. Pat. No. 5,571,749) in view of Yamazaki (U.S. Pat. No. 6,028,264)
and in view of Yamazaki (U.S. Pat. No. 5,556,794), as applied to claims 1-7 and 10-13,
and further in view of JP 2000-77694. References to JP 2000-77694 are made using
the column and line number references of Higashikawa (U.S. Pat. No. 6,252,158),
Application/Control Number: 09/866,665 Page 5
Art Unit: 1753
herein referred to as US '158, which is the U.S. patent in the JP 2000-77694 patent
family.
US '749, US '264 and US '794 disclose a method and silicon thin film having the
limitations recited in claims 1-7 and 10-13 of the instant invention, as explained above in
section 3. The method and device described by US '749, US '264 and US '794 further
differs from the instant invention because they do not disclose having a crystalline
Raman scattering at least three times greater than the Raman scattering due to
amorphous components.
Raman scattering shows the level of crystallization within silicon layers. The ratio
of crystalline component to amorphous component gives a measurement for the crystal
volume within the layer, i.e., a film having a crystalline component with a Raman
scattering three times greater than the Raman scattering of the amorphous component
has a crystal volume of 75%.
US '158 teaches a solar cell structure having several microcrystalline intrinsic
layers with crystal volumes ranging from 30% to 99% (col. 1 1 , line 66 to col. 12, line 3).
Microcrystalline silicon solar cells avoid "the optical degradation phenomenon (Staebier-
Wronski effect) specific to the amorphous semiconductors" (col. 2, lines 47-52).
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to have modified the silicon thin film described by US '749, US '264
and US '794 to use a thin film having a crystalline Raman scattering three times greater
than the amorphous Raman scattering, as taught by US '158, because a higher
Application/Control Number: 09/866.665 Page 6
Art Unit: 1753
crystalline Raman scattering helps avoid the deleterious effects of optical degradation
associated with amorphous semiconductors (US '158 col. 2, lines 47-52).
5. Claims 9 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Matsuda et al. (U.S. Pat. No. 5.571,749) in view of Yamazaki (U.S. Pat. No. 6,028,264)
and In view of Yamazaki (U.S. Pat. No. 5,556,794), as applied to claims 1-7 and 10-13,
and further in view of JP 1 1 -31 0495. References to JP 1 1 -31 0495are made using the
column and line number references of Kondo (U.S. Pat. No. 6,103,138), herein referred
to as US '138, which is the U.S. patent in the JP 11-310495 patent family.
US 749, US '264 and US 794 describe a method and silicon thin film having the
limitations recited In claims 1-7 and 10-13 of the instant invention, as explained above in
section 3. The silicon film described by US 749, US '264 and US 794 further differs
from the instant Invention because they do not disdose having a diffraction intensity of
the (220)-plane comprising at least 50% of the total diffraction intensity.
US '138 teaches the use of thin films having diffraction intensities in the (220)-
plane at least 30% of the total diffraction Intensity because "the thin film will have
notably improved carrier mobility" (col. 3, lines 37-40). US '138 further discloses
specific examples of thin films having diffraction intensities in the (220)-plane from 50%
to 60% relative to the total diffraction intensity (table 2).
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to have modified the thin film of US '749, US *264 and US 794 to
use a thin film having a diffraction Intensity in the (220)-plane at least 50% of the total
1
Application/Control Number: 09/866,665 Page 7
Art Unit: 1753
diffraction intensity, as taught by US '138, because using such a thin film will have a
"notably improved carrier mobility" (US '138 col. 3, lines 37-40).
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. See In re Goodman, 1 1
F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
USPQ 645 (Fed. Cir. 1985); in re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982);7n re VogeK 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington,
41 8 F.2d 528, 1 63 USPQ 644 (CCPA 1 969).
A timely filed terminal disclaimer in compliance with 37 CFR 1 .321(c) may be
used to overcome an actual or provisional rejection based on a nonstatutory double
patenting ground provided the conflicting application or patent is shown to be commonly
owned with this application. See 37 CFR 1 .130(b).
Effective January 1 , 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).
7. Claims 1 -1 5 are provisionally rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-16 of
copending Application No. 09/865,549 in view of Yamazaki (U.S. Pat. No. 6,028,264)
and in view of Yamazaki (U.S. Pat. No. 5,556,794), herein referred to as App. '549, US
'264 and US '794, respectively.
Claims 1 , 2, 5, 6, 1 1 and 1 2 of App. '549 claim a method and silicon thin film
formed using a silicon halide and hydrogen, wherein the silicon halide is a silicon
fluoride. Claims 3, 7 and 13 recite the limitation that the flow rate of hydrogen is not
less than the flow rate of the silicon halide. Claims 4, 8 and 14 recite the limitation that
the pressure is 50 mTorr or more. Claims 9 and 15 recite the limitation that the Raman
Application/Control Number: 09/866,665 Page 8
Art Unit: 1753
scattering from a crystalline component is at least three times greater than the Raman
scattering from an amorphous component. Claims 10 and 16 recite the limitation that
the percentage of diffraction intensity for the (220)-plane is at least 50% of the total
diffraction intensity.
App. '549 differs from the instant invention because App. '549 does not disclose
having oxygen present in the material gas at a concentration or from 0.1 ppm to 0.5
ppm, as recited in claims 1 , 4 and 10, and a oxygen concentration in the formed silicon
film having a concentration of 1 .5x10^® atoms/cm^ to 5.0x10^^ atoms/cm^, as recited in
claims 5 and 11.
US 794 and US '264 teach methods for reducing the oxygen concentration in the
layers of silicon thin films using molecular sieves or zeolites to adsorb oxygen when
forming i-type layers solar cells having pin junctions (US '264 col. 6, line 20). US '264
teaches the formation of an i-type silicon thin film layer having an oxygen concentration
less than 5.0x10^® atoms/cm^ and as low as 5.0x10^® atoms/cm^ (col. 6, line 26). US
'794 teaches the formation of an i-type silicon thin film less than 5.0x10''® atoms/cm^ or
as low as 5.0x10^^ atoms/cm^ (col. 8, line 62; col. 9, line 44).
Regarding claims 5 and 1 1, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to have modified the silicon thin film of
App. '549 to use a thin film having an oxygen concentration of 1 .5x10^® atoms/cm^ to
5.0x10^^ atoms/cm^ as taught by US '264 and US '794 because oxygen in the intrinsic
layer of solar cells act as donor centers and decreases the photo-sensitivity of solar
cells (US 794 col. 3, lines 19-42).
Application/Control Number: 09/866.665 Page 9
Art Unit: 1753
Claims 5 and 1 1 are product-by-process claims, and as such, if the product is the
same as or obvious from a product of the prior art, the claim is unpatentable (see MPEP
§ 21 13). Since all of the references teach the use of a CVD method and US 794 and
US '264 disclose the oxygen concentration in the final product, the instant claims would
have been obvious over the prior art.
Furthermore, in light of the fact that US 794 and US '264 teach the formation of
silicon layers having the specified oxygen concentration, and because the oxygen
concentration that is deposited is dependent on the concentration contained within the
material gas, it would have been inherent in the fabrication process of US 794 and US
'264 to have used a material gas with an oxygen concentration of 0.1 to 0.5 ppm based
on the concentration of silicon atoms. Using the specified process, a different oxygen
concentration would have yielded a different concentration of oxygen in the deposited
layer.
This is a provisional obviousness-type double patenting rejection because the
conflicting claims have not in fact been patented.
Response to Arguments
8. Applicant's arguments filed on July 28, 2003, have been carefully considered, but
are not persuasive.
9. As explained in the rejections set forth above, the formation of silicon films using
silicon fluoride and hydrogen as a material gas in a high-frequency plasma enhanced
CVD process is known. Furthermore, US '794 and US '264 disclose the oxygen
Application/Control Number: 09/866.665 Page 10
Art Unit: 1753
concentration of the final silicon film product within the claimed range. Both US 794
and US '264 disclose the formation of silicon layers using plasma CVD process (see
col. 6, lines 16-20 and col. 6, lines 34-44, respectively). US '264 specifically discloses
the use of silicon fluoride. US '794 discloses an example of forming a silicon film using
siiane and identifies the problem of high oxygen concentrations in silane material gases
(col. 8, lines 23-36). Both US 794 and US '264 seek to reduce the amount of oxygen in
the final silicon film using zeolites. This reduction results in a concentration of oxygen
within the range recited in the Instant claims. Since the final silicon film product has the
same concentration as the silicon film in the instant claims, it is expected that the
material gas would also have an oxygen concentration within the claimed range. This
expectation is justified because the concentration of components in the material gas
directly affects the concentration of components in the final film. In other words, in a
plasma CVD process, the concentration of components in a film is directly dependent
on the concentration of the material gas. A different oxygen concentration would have
yielded a different concentration of oxygen in the deposited layer.
1 0. Applicant has argued, "[0]ne of the goals of the Yamazaki references, which is to
remove all oxygen, is in direct contrast to the feature of Claim 1 discussed above, which
is to include a specific oxygen content of 0.1 to 0.5 ppm in a material gas used to form a
silicon-based film'" (see page 9 of Applicant's response).
1 1 , Applicant's argument is not persuasive because the Yamazaki references do not
teach silicon-based films having a zero oxygen concentration. Specifically, US '264
teaches an oxygen concentration "less than 5x10^® atoms/cm^ and as low as 5x10^^
Application/Control Number: 09/866,665 Page 1 1
Art Unit: 1753
atoms/cm^" (col. 6, lines 24-29). It is innpossible for such a layer to be formed using a
material gas having no oxygen, as suggested by Applicant. Similarly, US 794 teaches
a film having an oxygen content of 5x10^® atoms/cm^ or less (col. 8, lines 58-62).
1 2. Applicant has provided a graph (reprinted below) plotting the values of oxygen
concentration in thin films and oxygen concentration in material gases used to form the
thin films in response to the Exarhiner's position that the amount of oxygen contained
within the material gas would necessarily require a concentration of oxygen lying within
the range recited in the claims because the concentration of oxygen in the formed layer
is within the same range as that claimed by Applicant. Applicant states, "As can be
seen from the attached graph, the oxygen concentrations in the thin films do not vary
directly with the oxygen concentrations in the material gases used to form the thin films"
(see page 10 of Applicant's response).
atoms /cm^
OXYGEN CONCENTRATION IN MATERIAL GAS
Application/Control Number: 09/866,665 ^ Page 12
Art Unit: 1753
13. This argument is not persuasive because for every value of oxygen concentration
in the material gas, there is a definite corresponding value for the concentration of
oxygen in the film. As can be seen in the markings added by the Examiner, because
the concentration of oxygen in the film disclosed by Yamazaki in US 794, 5x10^^
atoms/cm^, lies between the data points shown for -0.1 ppm and -0.5 ppm, the oxygen
concentration in the material gas used by Yamazaki 794 would necessarily lie within the
claimed range of 0.1-0.5 ppm oxygen in the material gas, assuming that the function
describing relationship between the gas concentration and film concentration is a
continuous function. The assumption that the relationship is continuous is reasonable
because every oxygen concentration in the material gas results in a definite
concentration of oxygen in the film and the graph shows a relationship that an increase
in material gas oxygen concetration generally yields an increase in oxygen in the film.
(It. is noted that all points except one follow this general pattern; due to the lack of
experimental details used to generate the graph, the exceptional point is statistically
considered an outlyer and is insufficient to sway the Examiner's position.) Since the
oxygen concentration in the material gas would He within the claimed range, the instant
claims are not distinguished over the prior art.
14. Additionally, it is noted that Applicant's arguments contradict the data shown in
the graph. Applicant argues that the concentrations are not directly related, but the
point shown for 0.3 ppm in the material gas is not within the claimed concentration
range within the film as recited in the claims. Applicant's argument therefore raises
Application/Control Number: 09/866,665 Page 13
Art Unit: 1753
questions as to either the uncertainty of the graph, especially with regard to the
"outlyer", or the claimed ranges. Since the experimental procedure used to generate
the graph is not disclosed, it is assumed that the graph is not accurate.
Conclusion
15. All claims are drawn to the same invention claimed in the application prior to the
entry of the submission under 37 CFR 1.114 and could have been finally rejected on the
grounds and art of record in the next Office action if they had been entered in the
application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE
FINAL even though it is a first action after the filing of a request for continued
examination and the submission under 37 CFR 1 . 1 1 4. See MPEP § 706.07(b).
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or eariier communications from the
examiner should be directed to Brian L. Mutschler whose telephone number is (571)
Application/Control Number: 09/866,665
Page 14
Art Unit: 1753
272-1 341 . The examiner can normaliy be reached on Monday-Friday from 7:30am to
4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Nam Nguyen can be reached on (571) 272-1342. The fax phone number
for the organization where this application or proceeding is assigned is 703-872-9306.
Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-21 7-91 97 (toll-free).
bim
February 3, 2004
NAM nguxen;
SUPERVISORY PATE^^«^1
TECHNOLOGY CENTER 1700